Appeal No. 2001-0416
Application No. 09/074,292
In order to establish a prima facie case of obviousness, the
examiner must identify a suggestion or motivation to modify the
teachings of the cited references to achieve the claimed
invention. In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313,
1316-17 (Fed. Cir. 2000). The evidence of a suggestion,
teaching, or motivation to modify a reference may flow from the
prior art reference itself, the knowledge of one of ordinary
skill in the art, or from the nature of the problem to be solved.
Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996).
We are in agreement with appellant that the examiner’s
conclusion of obviousness is unsupported by the prior art. See
appeal brief, page 11, last paragraph - page 12. As pointed out
by appellant, Lee does not intentionally offset the second mask
during etching as required by the present claims. Rather, Lee’s
invention is directed towards “overcom[ing] many of the troubles
due to mask pattern misalignment.” See Lee, column 3, lines 36-
38. Thus, one of ordinary skill in the art, upon reading Lee’s
disclosure, simply would not have been motivated to intentionally
offset the masks, and, in particular, by a distance of ½ the
minimum pitch as required by the claims.
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